Retail Royalty Company and AEO Management Co. v. Domain Administrator
Claim Number: FA1203001437240
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Domain Administrator (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleoutlet.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2012; the National Arbitration Forum received payment on March 30, 2012.
On March 30, 2012, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <americaneagleoutlet.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@americaneagleoutlet.com. Also on April 3, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1. Complainant designs, markets, and sells clothing and accessories.
2. Complainant offers its products under its AMERICAN EAGLE mark.
3. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN EAGLE mark (e.g., Reg. No. 2,994,962 registered September 13, 2005).
4. Respondent’s <americaneagleoutlet.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark. Respondent’s disputed domain name resolves to a website that hosts hyperlinks resolving to Complainant’s competitors, which Respondent commercially benefits from.
5.
6. Respondent is not commonly known by the <americaneagleoutlet.com> domain name.
7. Respondent’s registration and use of the disputed domain name disrupts Complainant’s business.
8. Respondent is attempting to gain commercially by creating confusion as to Complainant’s affiliation with the <americaneagleoutlet.com> domain name.
9. Respondent had actual and constructive knowledge of Complainant’s rights in its AMERICAN EAGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a large and well known United States company which designs, markets, and sells clothing and accessories.
2. Complainant markets its products under its AMERICAN EAGLE mark.
3. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN EAGLE mark (e.g., Reg. No. 2,994,962 registered September 13, 2005).
4. Respondent registered the <americaneagleoutlet.com> domain name on March 18, 2006. It resolves to a website that hosts hyperlinks leading to Complainant’s competitors, from which Respondent commercially benefits.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants Retail Royalty Company and AEO Management Co.The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants claim that Retail Royalty Company, and Complainant, AEO Management Co., are wholly-owned subsidiaries of American Eagle Outfitters, Inc., which Complainants argue establishes Complainants as related companies.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it therefore treats them both as a single entity in this proceeding. For convenience, Complainants will be collectively referred to in this decision as “Complainant.”
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it owns rights in its AMERICAN EAGLE mark under Policy ¶ 4(a) (i). Complainant provides the Panel with evidence of its trademark registrations with the USPTO for its AMERICAN EAGLE mark (e.g., Reg. No. 2,994,962 registered September 13, 2005). Therefore, the Panel finds that Complainant owns rights in its AMERICAN EAGLE mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant then contends that Respondent’s <americaneagleoutlet.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark because the disputed domain name combines the mark with the term “outlet.” Complainant alleges that the term “outlet” describes Complainant’s business conducted from a store because Complainant sells its products at outlet stores. The Panel notes that the disputed domain name does not contain the space found in Complainant’s mark, but does contain the generic top-level domain (“gTLD”) “.com.” The Panel therefore concludes that Respondent’s <americaneagleoutlet.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark pursuant to Policy ¶ 4(a) (i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arab. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AMERICAN EAGLE mark and to use it in its domain name, adding only the word “ outlet” which gives the false impression that the domain name relates to a retail outlet of Complainant;
(b) Respondent has then decided to use the domain name so that it resolves to a website that hosts hyperlinks leading to Complainant’s competitors, from which Respondent undoubtedly benefits commercially.
(c)Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also contends that Respondent is not commonly known by the <americaneagleoutlet.com> domain name. Complainant claims that Respondent is not permitted to use Complainant’s AMERICAN EAGLE mark and that Respondent does not own any trademark or other intellectual property rights relating to the disputed domain name. Complainant argues that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Respondent did not submit a Response to this case and, therefore, did not present evidence that it is commonly known by the disputed domain name. Based on the evidence in the record, the Panel holds that Respondent is not commonly known by the <americaneagleoutlet.com> domain name for the purposes of Policy ¶ 4(c) (ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
(e) Complainant alleges that Respondent hosts competing hyperlinks on the website resolving from the <americaneagleoutlet.com> domain name, such as “Aéropostale” and “Urban Outfitters.” Complainant claims that Respondent commercially benefits from these hyperlinks. Complainant argues that such a use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <americaneagleoutlet.com> domain name. The Panel accepts these submissions and the evidence submitted to support them and finds accordingly. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
As noted above, Complainant claims that Respondent’s <americaneagleoutlet.com> domain name resolves to a website hosting competing hyperlinks. Complainant contends that the hosting of competing hyperlinks disrupts Complainant’s clothing and accessories business. Complainant argues that Respondent’s disruption of Complainant’s business demonstrates bad faith registration and use. The Panel agrees with these submissions and accepts the evidence adduced in their support. The Panel thus holds that Respondent registered and uses the <americaneagleoutlet.com> domain name in bad faith pursuant to Policy ¶ 4(b) (iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent is attempting to create confusion as to Complainant’s affiliation with the <americaneagleoutlet.com> domain name. Complainant claims that Internet users interested in Complainant may become confused when they reach the website to which Respondent’s disputed domain name resolves and that Respondent must be taken to profit from the competing links. Based on this evidence, the Panel concludes that Respondent registered and uses the <americaneagleoutlet.com> domain name in bad faith under Policy ¶ 4(b) (iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”).
Complainant also contends that in light of the fame and notoriety of Complainant's AMERICAN EAGLE mark, it is inconceivable that Respondent could have registered the <americaneagleoutlet.com> domain name without knowing of Complainant's rights in the mark. The Panel agrees with Complainant, that Respondent must be inferred to have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
In addition and having regard to the submissions of Complainant and the evidence submitted on its behalf, the Panel finds that Respondent has registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Accordingly, Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneagleoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 2, 2012
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